Plaintiff SP Technologies, LLC, the assignee of Patent No. 6,784,873 (the "'873 patent"), brought this patent infringement claim against Defendants TomTom, Inc., Garmin International, Inc., and Magellan Navigation, Inc. Defendant TomTom, Inc. (hereinafter "Defendant" or "TomTom") now moves for summary judgment, arguing that the '873 patent is unenforceable due to inequitable conduct on the part of the inventors. Specifically, Defendant argues that the creators of the '873 patent intentionally made material misrepresentation to the United States Patent and Trademark Office (USPTO) when applying for the patent. For the reasons that follow, Defendant's motion is denied.

FACTUAL BACKGROUND

Inventors Dr. Peter Boesen, a medical doctor, and Thomas Mann, a software developer, filed the application for what would become the '873 patent in August 2000. (Def.'s 56.1 ¶ 6.) The USPTO issued the patent on August 31, 2004. (Id.) The patent is entitled, "Method and Medium for Computer Readable Keyboard Display Incapable of User Termination." (Pl.'s 56.1 ¶ 1.) Claim 1 of the '873 patent describes in general terms the general method covered by the patent:

A method of entering data on a touch screen display, the method comprising: Invoking a computer program in which user input is sought;

Invoking an input area, including a plurality of data input fields;

Invoking a graphical keyboard area incapable of user termination independent of termination of the input area, the graphical keyboard area having a plurality of keys on the display;

Selecting keys on the keyboard to provide the desired input; and Automatically terminating the graphical keyboard area after the desired input is received in the input area. (Id. ¶ 2.) In layman's terms, the key features of this invention are a touch-screen keyboard that the user cannot move, resize, or close, but that the program closes automatically once the user has provided the necessary information.

The claims of the '873 patent were rejected by the Patent Examiner at least four times prior to the issue of the patent. (Def.'s 56.1 ¶ 25.) In response to the March 21, 2002 rejection, the inventors stated, "The Applicant notes that in rejecting original claim 1, the Examiner indicated that Buxton*fn1 discloses a keyboard incapable of user termination. The Applicant submits that Buxton does not disclose the keyboard of the Applicant's invention." (Id. ¶ 26.) In subsequent amendments to their application, the inventors emphasized that the uniqueness of their invention is shown in substantial part by the fact that the "user has no ability to move, resize, remove, or close the graphical keyboard." (Id. ¶ 27.) When they filed the '873 patent on August 4, 2000, both Boesen and Mann made the following declarations: "I believe I am the original, first and sole inventor of the subject matter which is claimed and for which a patent is sought." (Def.'s 56.1 ¶ 31.)

Defendant's motion alleges that the inventors acted inequitably in two ways. First, Defendant claims that twenty lines of the computer code included in the patent originated from a third party, a fact that the inventors did not disclose in their application or in any of the amendments. The lines of code at issue perform the function of disabling the "X button" on the keyboard, the button that would normally allow a user to close the keyboard. (Pl.'s 56.1 ¶ 18.) These twenty lines of code are identical to those that were found on a third-party website on April 23, 1999, more than one year prior to the filing of the '873 patent application. (Def.'s 56.1 ¶ 16.) The lines of code on that website are identical to the code in the '873 patent, including misspelling the word "separator." (Id. ¶¶ 14-15.) Both inventors nevertheless stated in affidavits that they had no knowledge of the website in question. (Pl.'s 56.1 ¶¶ 20, 22.) In fact, Mann, the only one of the two inventors who is a software programmer, stated that he never even visited the website prior to filing the '873 patent. (Id. ¶¶ 19, 23.) During his deposition,*fn2 Mann did concede that the lines of code in question may have come from a "Microsoft support document" which he had access to as part of an agreement with Microsoft as one of their developers. (Mann Dep. 147:5-19, Ex. N to Def.'s 56.1.)*fn3 Mann also admitted that while he was working on the code in the '873 patent, he reviewed a number of subroutines,*fn4 some of which may have been provided by Microsoft Visual Basic online support. (Pl.'s 56.1 ¶ 26.) Mann did not specifically recall relying on that support system for the twenty lines of code that disable the "X" button, however. (Mann Dep. 113:4-7, Ex. N to Pl.'s 56.1.)

Defendant also argues that Plaintiff failed to disclose Palm handheld devices that, according to Defendant, disclose or suggest all the elements of the asserted claims of the '873 patent. Defendant asserts that "Palm devices, such as the Palm III, do not include a button that allows the user to minimize, maximize, or move the graphical keyboard and instead require hitting the "Done" button after entering the desired input." (Def.'s 56.1 ¶ 20.) And, Defendant notes, there is evidence that the inventors knew about Palm devices: Dr. Boesen had previously filed a patent application that referred to "Palm Pilot[s]" and the "Palm O[perating ]S[ystem." See U.S. Patent No. 6,560,468, col. 4 (filed Oct. 11, 1999). Plaintiff contends that the inventors did not withhold any relevant information concerning "Palm devices," and in fact cited two newspaper articles that discuss Palm devices in the patent itself. (Pl.'s 56.1 ¶ 16.) Plaintiff has further moved to strike several of Defendant's statements as violating Local Rule 56.1(a).

DISCUSSION

Summary judgment should be granted when "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c). All reasonable inferences must be drawn in favor of the party opposing summary judgment. Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1378 (Fed. Cir. 2008).

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